Accelerating Patent Examination In Brazil

By Gustavo Sartori (with foreword by Jim Boff of P&L) first printed in the CIPA Journal

One of the major concerns about Brazilian patent system has been the time it takes for obtaining patent protection or, in other words, the backlog. In 2015, the time an applicant had to wait for receiving a grant notice was around ten years from filing, on average, and, depending on the technical field, this time could be even longer. In order to overcome this situation, the Brazilian Patent Office has taken some initiatives to try to reduce the backlog and improve productivity, as for example hiring new examiners, reviewing internal procedure, and turning to electronic or digital proceedings as much as possible. However, on their own these initiatives are not enough to solve the backlog. Particularly, hiring the necessary number of examiners to analyze the almost 200,000 applications waiting examination would be a problem, for two main reasons. First, Brazil is now recovering from a recession and the government does not have the necessary budget to hire more people in the next few years. Second, the examiners in Brazil are public employees, which means that they are appointed for life, so that if extra examiners are recruited they cannot be fired as soon as the backlog is over and the Brazilian Patent Office resumes analyzing the regular amount of applications it receives per year (approximately 26,000). Therefore, the Brazilian Patent Office has been trying to find solutions that do not involve significantly increasing the number of examiners.

Accordingly, the Brazilian Patent Office has released new programmes for accelerating examination and expanded some of the already existing fast-track options, as a way to test different options and to permit some applications to be examined first. As these multiple expedited examination programmes are relatively recent in Brazilian practice, not everyone knows them very well and that is the reason it is worth providing a few comments on the main ones. This article will cover the main fast-track options made available by the Brazilian Patent Office.

Pre-examination office action

Since last year, the Brazilian Patent Office has begun to work on an initiative called pre-examination office action. According to this initiative, the Brazilian Patent Office identifies patent applications that have a counterpart allowed or granted abroad. Then, a formal office action is issued on these applications, containing the prior art cited during the examination...